Prosecution History Estoppel

Redrafting of dependent claim, directed to process for preparation of antibiotic compound, in independent form constituted narrowing amendment made for substantial reason related to patentability, since redrafting further defined and circumscribed existing limitation to put claim in condition for allowance; patentee has failed to overcome presumption that redrafting surrendered coverage of asserted equivalent under Festo.  In this instance, the applicant canceled claims 1-10 and submitted new claims 11-16 wherein independent claim 11 was a rewriting of a number of dependent claims into independent form.  (Ranbaxy Pharmaceuticals Inc. v. Apotex Inc., 69 USPQ2d 1086, CA FC, 11/26/03).


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